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EXHIBIT 10.20
MASTER MATERIAL TRANSFER AGREEMENT/
NON-EXCLUSIVE LICENSE AGREEMENT
FOR
NON-COMMERICAL RESEARCH PURPOSES ONLY
This is a Master Material Transfer Agreement and a Non-exclusive
License Agreement between THE BOARD OF TRUSTEES OF THE UNIVERSITY OF ALABAMA FOR
ITS OPERATING DIVISION, THE UNIVERSITY OF ALABAMA AT BIRMINGHAM (hereinafter
"UAB") located at 701 20th Street, South, Birmingham, Alabama, 35205 and
ATHERSYS, INC. located at 3201 Carnegie Avenue, Cleveland, Ohio 44115-2634
(hereinafter "ATHERSYS") to hold in confidence and to use certain MATERIAL, as
defined herein below, solely for non-commercial research purposes.
WHEREAS, ATHERSYS has developed certain proprietary technology, in
particular, but without limitation, the RAGE technology and thereby has created
by use of the RAGE technology, approximately fifty (50) proteins (which may be
increased by mutual agreement between ATHERSYS and UAB from time to time by
amendment or revision of attached "Exhibit A" as defined below herein) for which
ATHERSYS desires to utilize the expertise of Dr. Lawrence J. DeLucas, a faculty
member at UAB and Director of the Center for Biophysical Sciences and
Engineering ("CBSE"); and
WHEREAS, Dr. DeLucas and the Center for Biophysical Sciences and
Engineering have developed certain proprietary technology along with know-how
and software, as well as hardware that can be utilized to analyze compositions
of matter such as proteins and it is the desire of ATHERSYS and UAB that Dr.
DeLucas and the CBSE perform certain analysis on the proteins identified herein
on attached "Exhibit A"; and
WHEREAS, upon the completion of the analysis by Dr. DeLucas at UAB in
the CBSE, the parties desire to continue the collaborative research objectives
to be identified in subsequent documents between the parties.
NOW THEREFORE, for good and valuable consideration and the faithful
performance of the covenants herein, the parties agree as follows:
I. DEFINITION OF MATERIAL/OWNERSHIP OF MATERIAL:
UAB agrees that ATHERSYS owns all rights, title and interest in and to the
proteins identified in "Exhibit A" that were created with the proprietary
RAGE(TM) technology, together with all materials, unmodified derivatives and
other manifestations thereof and confidential, technical or other data used in
conjunction therewith or related thereto, including research data obtained by
use thereof, which shall be referred to in this Agreement as the "MATERIAL"
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II. OBLIGATIONS OF UAB:
In response to the desires of the parties, UAB's request for the MATERIAL,
as described and set forth on attached "Exhibit A" and as amended and
revised by the parties in the future, UAB agrees to the following regarding
the transfer by ATHERSYS of the MATERIAL to UAB:
1. The MATERIAL is the property of ATHERSYS and is made available to
UAB as an initial aspect of an evaluation of UAB's CBSE and its
ability to perform certain services as it relates to the
potential relationship between the parties referenced above.
Specifically, UAB shall perform and determine the three
dimensional structures of said MATERIAL (hereinafter "PURPOSE").
2. ATHERSYS hereby grants to UAB a nonexclusive license to the
MATERIAL solely for the PURPOSE, defined herein above, under and
subject to the terms of this Agreement. UAB agrees that the
performance of the services under this Agreement does not
transfer to UAB any right, title or interest in the MATERIAL.
Specifically, title to the MATERIAL shall remain in ATHERSYS and
transfer of said MATERIAL by ATHERSYS is to be considered a
bailment for purposes of this Agreement and not a conditional or
unconditional sale.
3. The MATERIAL shall not be used in any research that is subject to
any consulting or license agreement with or sponsored by any
third party without the prior written consent of ATHERSYS. The
MATERIAL shall not be commingled with any biological material(s),
sponsored or funded by any third party without the prior written
consent of ATHERSYS.
4. UAB may not assign, sublicense, transfer or convey any rights
established in this Agreement to any third party, other than the
UAB Research Foundation (UABRF), without the prior written
consent of ATHERSYS and any such assignment, sublicensing, or
transfer without ATHERSYS' consent shall be void. UAB may not
assign, sublicense, transfer or convey any rights established in
the MATERIAL to any third party without the prior written consent
of ATHERSYS and any such assignment, sublicensing, or transfer
without ATHERSYS' consent shall be void. UABRF may not assign,
sublicense, transfer or convey any rights established in this
Agreement or the MATERIALS to any third party, without the prior
written consent of ATHERSYS and any such assignment,
sublicensing, or transfer without ATHERSYS' consent shall be
void.
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5. UAB SHALL NOT USE THE MATERIAL IN HUMANS OR IN ANIMALS THAT WILL
BE USED FOR HUMAN CONSUMPTION.
6. UAB shall not distribute or release the MATERIAL to any person
other than laboratory personnel under the direct supervision of
Dr. DeLucas without the prior written consent of ATHERSYS.
7. UAB, if required by ATHERSYS, will pay all costs of
transportation of the MATERIAL from ATHERSYS to UAB and, if
necessary, costs of transporting unused MATERIAL from UAB back to
ATHERSYS.
8. Upon the termination of this Agreement, as provided herein below,
UAB will return all the MATERIAL to ATHERSYS within ten (10) days
of the termination date.
9. UAB agrees that it will provide the results of its research
utilizing the MATERIAL to ATHERSYS, including copies of all
articles, abstracts, and any written information, et cetera,
reporting or utilizing the results of all research by UAB using
the MATERIAL.
10. UAB shall not publish or disclose to others the results of
research using the MATERIAL without submitting the proposed
publication or disclosure to ATHERSYS at least thirty (30) days
prior to submission for publication or disclosure to allow
ATHERSYS to review the matter for disclosure of ATHERSYS
proprietary information.
11. UAB agrees to use the MATERIAL in compliance with all applicable
federal, state or local statutes and regulations as well as in
compliance with all UAB applicable policies, rules and
regulations that UAB may revise, amend or delete solely at its
discretion
III. DISPOSITION OF INTELLECTUAL PROPERTY ARISING FROM THIS AGREEMENT:
If UAB's research results in an invention, new use or a product based
on, containing, or relating to the MATERIAL ("Invention"), UAB will
promptly disclose the Invention to ATHERSYS. Title to any subject matter of
any patent or patent application generated or developed through the use of
this MATERIAL shall be governed by the rules of United States Inventorship
provided that ATHERSYS shall have first right to negotiate an exclusive
license to any invention conceived in part or whole by UAB ("UAB
Invention") for a period of
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six (6) months following the disclosure of said Invention. UAB and ATHERSYS
will negotiate in good faith to reach mutual agreement on terms relating to
the commercial exploitation of the UAB Invention. Said agreement to include
a fair and equitable sharing of patent costs, income and invention
management responsibilities based on the respective parties' contributions
to the Invention or as otherwise mutually agreed. If UAB and ATHERSYS are
unable to come to terms during the initial six (6) month period, UAB will
be free to negotiate a license covering a UAB Invention to a third party
("Third Party Offer"), provided that ATHERSYS will retain a first right of
refusal to match the terms of any such Third Party Offer, such first right
of refusal to be exercised within thirty (30) days of presentation of Third
Party Offer to ATHERSYS by UAB in writing.
IV. MISCELLANEOUS:
A. IT IS UNDERSTOOD BY BOTH PARTIES THAT THE MATERIAL IS EXPERIMENTAL IN
NATURE AND IS PROVIDED "AS IS" WITHOUT ANY WARRANTY, EXPRESS OR
IMPLIED, INCLUDING ANY WARRANTY OF MERCHANTIBILITY, TITLE, OR FITNESS
FOR A PARTICULAR PURPOSE. ATHERSYS MAKES NO REPRESENTATION THAT THE
USE OF THE MATERIAL WILL NOT INFRINGE ON ANY PATENT OR OTHER
PROPRIETARY RIGHTS. UAB MAKES NO REPRESENTATION THAT THE USE OF THE
DATA WILL NOT INFRINGE ON ANY PATENT OR OTHER PROPRIETARY RIGHTS.
B. In no event shall UAB be liable for any use of the MATERIAL or
generated data. ATHERSYS hereby agrees to defend, indemnify, and hold
harmless UAB and its trustees, employees, staff, and agents against
any claims, losses, demands or liability, of whatsoever kind or
nature, which may arise from or in connection with UAB's acceptance of
the MATERIAL including the use, handling, storage, or research to be
conducted with the MATERIAL by UAB; provided that ATHERSYS shall have
no obligation to indemnify UAB for negligent acts or willful
misconduct, or for consequences of UAB's breach of this Agreement.
C. All modifications of, waivers of and amendments to this Agreement or
any part hereof must be in writing signed on behalf of each
undersigned party. This Agreement represents the entire and integrated
agreement between the parties and supersedes all prior negotiations
representations or agreements, either written or oral.
D. It is further understood and agreed that no failure or delay by either
party in exercising any right, power or privilege under this Agreement
shall operate as a waiver thereof nor shall any single or partial
exercise thereof preclude any other or further exercise of any right,
power or privilege hereunder.
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E. In the event that any provision or portion of this Agreement is
determined to be invalid or unenforceable for any reason, in whole or
in part, the remaining provisions of this Agreement shall be
unaffected thereby and shall remain in full force and effect to the
fullest extent permitted by applicable law.
F. The invalidity or enforceability of any provision hereof shall in no
way affect the validity or enforceability of any other provision.
G. Obligations of the parties as set forth in this Agreement arising out
of events occurring during the life of this Agreement shall survive
the termination of this Agreement.
V. TERMINATION:
This Agreement shall be for a term of one (1) year or until the
MATERIAL has been entirely consumed or destroyed by UAB, whichever shall
occur first. Either party shall have the right to terminate this Agreement
at any time upon twenty (20) day's prior written notice. The Agreement may
be extended for additional one (1) year periods or until the MATERIAL has
been consumed or destroyed unless either party shall give written notice of
intent not to renew prior to the expiration of the applicable term.
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IN WITNESS WHEREOF, UAB and ATHERSYS have executed this Agreement on the day
of September 20, 2000.
THE BOARD OF TRUSTEES OF ATHERSYS INC.
THE UNIVERSITY OF ALABAMA FOR
THE UNIVERSITY OF ALABAMA AT
BIRMINGHAM
/s/ Gil Van Bokkelen
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NAME: /s/ Peter V. O'Neil NAME: Gil Van Bokkelen
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TITLE: Provost TITLE: President and CEO
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DATE: 9/20/2000 DATE: 9/20/2000
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DR. LAWRENCE J. DELUCAS:
/s/ Lawrence J. Delucas
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DATE: 9/20/2000
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